Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 Sep 2025 has been entered.
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 30 Sep 2025 has been entered.
Claims 1, 5-8, 11-13, 17, 18, 22, 24-26, 30-33, 36-38, 42, 43, 47-53 and 55-73 remain pending in the application.
Claims 1, 11, and 26 are amended.
Claim 2-4, 9, 10, 14-16, 19-21, 23, 27-29, 34, 35, 39-41, 44-46, 54 are cancelled.
Claims 7, 8, 11-13, 26, 30-33, 36-38, 42, 43, 47-53, 55-72 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Claims 7, 8, 11-13 and 63-72 are withdrawn as they require component (b) as a compound other than the elected pinoxaden.
Claims 1, 5, 6, 17, 18, 22, 24, 25 and 73 are under consideration to the extent of the elected species, i.e., that the ACCase inhibitor is pinoxaden.
Rejections Maintained
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The rejection below is reapplied as previously presented and updated to better address the amendment to the ratio in claim 1.
Claims 1, 5, 6, 17, 18, 22, 24, 25 and 73 are rejected under 35 U.S.C. 103 as being unpatentable over Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
Eckelbarger teaches herbicidal compounds of Formula (I):
PNG
media_image1.png
252
273
media_image1.png
Greyscale
(abstract, [0004], [0015]). Eckelbarger teaches values for the R1, R2, R3, R4, A and X variables that render obvious the compounds recited in the instant claims (see [0005]-[0015]). For instance, Eckelbarger teaches that A may be
PNG
media_image2.png
114
112
media_image2.png
Greyscale
([0172]), X may be CF ([0171]), R3 and R4 may be Hydrogen and R2 may be chlorine ([0169]). This combination provides the structure of
PNG
media_image3.png
200
400
media_image3.png
Greyscale
. Eckelbarger teaches that the R1 group may be OR1’ where OR1’ may be hydrogen, C1-C8 alkyl or C7-C10 arylalkyl ([0006]), matching the requirements presented in claim 1. The C7 arylalkyl group renders obvious the benzyl group and thus the structure of instant claim 73. Eckelbarger exemplifies the compound
PNG
media_image4.png
154
195
media_image4.png
Greyscale
([0317]) which is identical to the compound recited in instant claims 1, 5 and 6. Eckelbarger teaches that the compounds of Formula (I) may be used as herbicides to control undesirable vegetation (abstract, [0015]). Regarding the acetyl CoA carboxylase (component b of the composition) of claims 1, 17 and 18, Eckelbarger teaches that the compositions may be used in conjunction with one or more other herbicides such as pinoxaden (the elected species) ([0201]). Eckelbarger teaches a list of other herbicides that can be used with the composition ([0201]). As evidenced by NIH, herbicides are a type of pesticide (page 1). Thus, the teachings of Eckelbarger of one or more other herbicides renders obvious an additional pesticide. Regarding claim 24 which requires components (a) and (b) as the only active ingredients in the composition, this limitation would be obvious as Eckelbarger teaches compositions of formula (I) and that it may be used in combination with one other herbicide, as described above. Eckelbarger does not require additional actives to be used and it would have been obvious to one of ordinary skill to limit the active components in the composition to only what is necessary for the desired treatment. Regarding claim 22, Eckelbarger teaches that the compounds may be used in mixtures containing an herbicidally effective amount of the compound along with at least one agriculturally acceptable adjuvant or carrier ([0185]). Regarding claim 25, Eckelbarger teaches that the compositions may be concentrates or formulations that are diluted with additional carriers and adjuvants before application ([0185]).
Eckelbarger teaches that pre-emergent and post-emergent application rates of the composition range from 1 to about 4000 g/ha ([0200]). Eckelbarger further exemplifies application of various compounds of Formula (I) applied at various rates such as 35, 70 and 140 g/ha with result performance varying based on the specific compound applied and the species being treated (page 68 Table 15).
Eckelbarger does not teach the weight ratios of a compound of Formula (I) and pinoxaden as recited in instant claim 1. This deficiency is made up for in the teachings of Satchivi.
Satchivi teaches an herbicidal mixture comprising a first pyridine or pyrimidine carboxylic acid herbicide and a second herbicide which may be pinoxaden ([0006]). Satchivi exemplifies use of pinoxaden for controlling weeds in cereal crops by application at rates such as 7.5 and 15 g/ha (page 9 Table 3).
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have formed an herbicidal composition comprising a compound of Formula (I) and one or more other herbicides such as pinoxaden, as is taught by Eckelbarger, and to have applied the compound of Formula (I) at a rate ranging from 1 to 4000 g/ha and the compound pinoxaden at rates such as 7.5 and 15 g/ha. Compounds of Formula (I) are known for use at rates of 1 to 4000 g/ha and the rate may be adjusted based on the specific compound applied and the specific species that is being treated, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 1 to 4000 g/ha of a compound of Formula (I) and a rate of 15 g/ha pinoxaden results in a weight ratio of the compound to pinoxaden of 1:15 to 267:1, which renders obvious the rate of the instant claims. It would be obvious to form an herbicidal mixture of a compound of Formula (I) and pinoxaden as described above and it would be further obvious to have them at a ratio such as 1:15 to 267:1 as this ratio represents a ratio of the application rates in g/ha of the individual components that are known to be suitable for treatment of various crop and weed species.
In addition to the obviousness of the recited weight ratios as described above, it is further recognized that the weight ratios are obvious as a matter of routine experimentation. As described above, the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated. Additionally, pinoxaden may be applied to various weed species at different rates with variable effectiveness. Thus, the amount of a compound of Formula (I) and the amount of pinoxaden that is applied to a weed species is an art-recognized result effective variable such that determining that the ratio of a compound of Formula (I) and pinoxaden would be about 1:50 to about 1:1 would be a matter of optimization through routine experimentation. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would be obvious to one of ordinary skill to determine the most suitable application rate for the different components of a mixture of a compound of Formula (I) and pinoxaden depending on the specific compound of Formula (I) that is utilized and based on the weed species to be treated as the effectiveness of the treatment is dependent on these parameters as demonstrated by Eckelbarger and Satchivi.
Response to Arguments
Applicant's arguments filed 30 Sep 2025 have been fully considered but they are not persuasive. The applicant argues for unexpected results to overcome the obviousness rejection. The applicant observes that a combination of Compound 1 and an alternative herbicide such as pinoxaden or clethodim provide performance in controlling specific weed species better than their expected additive effect. The applicant points to portions of Tables 8 and 9 to highlight instances where the observed weed control performance was greater than what they expected (pages 12-13 of remarks). The examiner is not persuaded that the data presented is sufficient to overcome the obviousness rejection above. The applicant claims that the skilled artisan would have considered the test results as truly unexpected, but other than highlighting some instances where the combination performed better than expected, has not provided clear reasons as to why these results should be understood as unexpected in such as way to overcome the obviousness of their combination. For instance, the combination in the claims is dependent on the ratio of the compound to the ACCase inhibitor. The results pointed to by the applicant highlight three ratios of compound to inhibitor, namely 1:6 (i.e. 5:30), 1:7 (i.e. 10:70), and 1:14 (i.e. 5:70). The applicant emphasizes that the results indicated improved performance over what was expected, but this leaves the question of whether the results are truly unexpected if the results demonstrate improved performance at each of the values tested. This seems to indicate that the combination of the two components at any ratio may be expected to have enhanced performance. Is there a significance to the 1:50 to 1:1 range that is currently claimed? In other words, is there a region where the combination of the components does not generate improvements in performance, or is it the case that the combination of the two components would be expected to have improved performance, no matter the ratio at which they are combined?
The applicant notes that the examiner has previously argued that the results presented are not commensurate in scope with the claimed composition. To address this, the applicant has presented new data in their remarks highlighting results from testing of two additional compounds. As a first matter the examiner notes that the new data has not been properly presented in a declaration and thus can not be persuasive in overcoming the rejection. The examiner notes that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). The objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP 2144.05(III)(A) and 716.01(c). Therefore, in the absence of an appropriate showing, comparing the claimed invention to the closest prior art to establish criticality, applicants’ arguments and alleged distinction are not found persuasive.
As a second matter, the examiner notes that the results presented by the applicant appear insufficient to establish results commensurate in scope with the claims. The applicant has tested additional compounds but has not signicifantly expanded the range of the ratio of compounds tested or tested additional ACCase inhibitors. The claims currently have ratios of the compounds ranging from 1:50 to 1:1 which is much broader than the tested ratios. Further, only a couple of ACCase inhibitors have been pointed to in the results and those are paired with Compound 1 but the claims are open to any ACCase inhibitor with any of the compound claimed. The results presented by the applicant in the specification indicate a level of unpredictability in herbicidal performance where it would not be surprising to find instances where a particular combination performed better than expected in some scenarios and worse than expected in some other scenarios. For example, in several cases the observed effect was even less than what was expected (e.g. 95% expected and 30% observed when treating HELAN with compound 1 and pinoxaden in Table 8). The applicant has not provided a reason as to why one would expect the results they present as unexpected to be applicable across the various combinations that they have claimed.
Overall, the unexpected results presented by the applicant are insufficient, when weighed with the strong prima facie case of obviousness. The limited evidence is insufficient to overcome the strong showing of obviousness in this case to select the compounds of the instant claims with inhibitors such as pinoxaden as is obvious from the teachings of Eckelbarger and Satchivi. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“[W]e hold that even if Pfizer showed that amlodipine besylate exhibits unexpectedly superior results, this secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 6, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 9,637,505 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘505 patent claims in claims 1-25 a compound of Formula (I)
PNG
media_image5.png
186
239
media_image5.png
Greyscale
and the variable groups as claimed read on the functional groups of the compounds in the instant claims.
Claim 26 of the ‘505 patent recites the compound of Formula (I) as part of an herbicidal composition comprising an agriculturally acceptable adjuvant or carrier. Claim 27 recites an additional herbicidal compound. Claims 28 and 29 recite a safener in the composition.
The ‘505 patent does not recite the addition of an ACCase inhibitor such as pinoxaden and the weight ratios as recited or that the composition is an herbicidal concentrate (claim 25). These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘505 patent and to have formed the composition as an herbicidal concentrate. The same compound of Formula (I) of the ‘505 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Regarding instant claim 24, the combination of the ‘505 patent and Eckelbarger do not require active ingredients in addition to a compound of Formula (I) and pinoxaden. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 15 g/ha pinoxaden results in a weight ratio of 35:15 (2.3:1), which renders obvious the rates of instant claims 19-21. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 5, 6, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9,763,445 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘445 patent claims a safened herbicidal composition comprising a pyridine carboxylic acid herbicide of Formula (III)
PNG
media_image6.png
333
385
media_image6.png
Greyscale
and a quinolinyloxyacetate safener. Claim recites
PNG
media_image7.png
128
239
media_image7.png
Greyscale
which is identical to compounds of instant claims 1, 5, 6 and 73. Claims 4-7 recite specific safeners and ratios of the compound of Formula (III) and the safener. Claim 7 recites an additional adjuvant. Claim 8 recites an additional pesticide.
The ‘445 patent does not recite the addition of an ACCase inhibitor such as pinoxaden in the and the weight ratios as recited or that the composition is an herbicidal concentrate (claim 25). These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘445 patent and to have formed the composition as an herbicidal concentrate. The same pyridine carboxylic acid herbicide compound of the ‘445 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Regarding instant claim 24, the combination of the ‘445 patent and Eckelbarger does not require active ingredients in addition to the pyridine carboxylic acid herbicide and pinoxaden. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 15 g/ha pinoxaden results in a weight ratio of 35:15 (2.3:1), which renders obvious the ratio of instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 5, 6, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,455,836 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘836 patent claims a herbicidal composition comprising a pyridine carboxylic acid herbicide of
PNG
media_image8.png
149
190
media_image8.png
Greyscale
and a photosystem II inhibitor. The pyridine carboxyl acid compounds of claims 1-3 and 11-13 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 4-6 require the photosystem II inhibitor is bromoxynil, isoproturon or metribuzin. Claim 7 recites an additional adjuvant. Claim 9 requires the pyridine carboxylic acid the photosystem II inhibitor as the only active. Claim 10 recites the composition as an herbicidal concentrate.
The ‘836 patent does not recite the addition of an ACCase inhibitor such as pinoxaden in the and the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
In addition to pinoxaden, Eckelbarger teaches bromoxynil, isoproturon and metribuzin as suitable components in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘836 patent. The same pyridine carboxylic acid herbicide compound of the ‘836 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the bromoxynil, isoproturon or metribuzin of the ‘836 patent claims with pinoxaden as pinoxaden, bromoxynil, isoproturon and metribuzin are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 24, the combination of the ‘836 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and pinoxaden and the substitution of pinoxaden would remove the other active component. It is known that such compositions may be formed as concentrates, as taught by Eckelbarger. Thus, one of ordinary skill would have a reasonable expectation of success in forming the composition as the same compounds are taught as suitable in herbicidal compositions by Eckelbarger. Regarding the ratio of the components, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 15 g/ha pinoxaden results in a weight ratio of 35:15 (2.3:1), which renders obvious the ratio of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 5, 6, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10,448,638 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘638 patent claims a herbicidal composition comprising a pyridine carboxylic acid herbicide of
PNG
media_image8.png
149
190
media_image8.png
Greyscale
and an ALS inhibitor. The pyridine carboxyl acid compounds of claims 1-3 and 18-20 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 4-13 and 21-25 require specific ALS inhibitors such as florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron and ratios of the component with the pyridine carboxylic acid herbicide. Claim 14 recites an additional adjuvant. Claim 15 recites an additional pesticide. Claim 16 recites the pyridine carboxylic acid the ALS inhibitor as the only actives. Claim 17 recites the composition as an herbicidal concentrate.
The ‘638 patent does not recite the addition of an ACCase inhibitor such as pinoxaden in the and the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
In addition to pinoxaden, Eckelbarger teaches florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron as suitable components in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘638 patent. The same pyridine carboxylic acid herbicide compound of the ‘638 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron of the ‘638 patent claims with pinoxaden as pinoxaden, florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 24, the combination of the ‘638 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and pinoxaden and the substitution of pinoxaden would remove the other active component. Regarding the ratio of the components in the instant claims, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 15 g/ha pinoxaden results in a weight ratio of 35:15 (2.3:1), which renders obvious the ratio of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Claims 1, 5, 6, 17, 18, 22, 24, 25 and 73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 9,521,847 in view of Eckelbarger et al. (US2014/0274695, published 18 September 2014) as evidenced by NIH (Pesticides) in view of Satchivi et al. (US 2009/0062121, published 05 Mar 2009).
The ‘847 patent claims an herbicidal composition comprising (a) a pyridine carboxylic acid herbicide of
PNG
media_image9.png
112
123
media_image9.png
Greyscale
and (b) synthetic auxin herbicide or auxin transport inhibitors such as 2,4-D. The pyridine carboxyl acid compounds of claims 1-6 render obvious the pyridine carboxylic acid compound of the instant claims. Claims 7-10 recite specific ratios of the (a) and (b) components. Claims 11 and12 recite an additional adjuvant and safener. Claim 13 recites an additional pesticide. Claim 14 recites the pyridine carboxylic acid the synthetic auxin herbicide or auxin transport inhibitor as the only actives. Claim 15 recites the composition as an herbicidal concentrate.
The ‘847 patent does not recite the addition of an ACCase inhibitor such as pinoxaden in the and the weight ratios as recited. These deficiencies are made up for in the teachings of Eckelbarger and Satchivi.
The teachings of Eckelbarger and Satchivi are described supra.
In addition to pinoxaden, Eckelbarger teaches 2,4-D as a suitable component in combination with the pyridine carboxylic herbicides ([0201]).
Based on the teachings of Eckelbarger and Satchivi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included pinoxaden in the herbicidal composition of the claims of the ‘847 patent. The same pyridine carboxylic acid herbicide compound of the ‘847 patent is known for use in herbicidal compositions in combination with other herbicides such as pinoxaden, as taught by Eckelbarger. Alternatively, it would have been obvious to have substituted the 2,4-D of the ‘847 patent claims with pinoxaden as pinoxaden, florasulam, imazamethabenz, bispyribac, propoxycarbazone, thiencarbazon, iodosulfuron and mesosulfuron are all known as suitable in combination with the pyridine carboxylic acids. Regarding instant claim 24, the combination of the ‘847 patent and Eckelbarger do not require active ingredients in addition to the pyridine carboxylic acid herbicide and pinoxaden and the substitution of pinoxaden would remove the other active component. Regarding the ratio of the components in the instant claims, the application rates of the compounds of Formula (I) of Eckelbarger and the application rate of pinoxaden as taught by Satchivi render obvious the ratios of the instant claims. For instance, application of compounds of Formula (I) at 35 g/ha are known, as taught by Eckelbarger. Similarly, pinoxaden is known to be useful at application rates such as 7.5 and 15 g/ha. An application rate of 35 g/ha of a compound of Formula (I) and a rate of 15 g/ha pinoxaden results in a weight ratio of 35:15 (2.3:1), which renders obvious the ratio of the instant claims. Alternatively, it would be a matter of optimization through routine experimentation to determine the suitable ratio of the components as the compounds of formula (I), as taught by Eckelbarger, may be applied at various application rates depending on the compound applied and the weed that is to be treated and pinoxaden may also be applied to various weed species at different rates with variable effectiveness, as taught by Satchivi, thus indicating that the amount of each substance that is applied is a result effective variable which one of ordinary skill would recognize and could optimize.
Response to Arguments
Applicant's arguments filed 30 Sep 2025 have been fully considered but they are not persuasive. The applicant argues that the unexpected results presented are sufficient to overcome the case of obviousness from the teachings of Eckelbarger and Satchivi. The examiner has addressed these arguments in the response to arguments section above and refers back to them in addressing the applicant’s arguments regarding the double patenting rejections. Overall, the results presented are insufficient to overcome the rejections.
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600